UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`615068.2
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`615068.2
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64(c) and the Scheduling Order attached to the
`
`Board’s April 9, 2015 Order (Paper No. 16), as modified by the parties’ Joint
`
`Stipulation to Modify the Scheduling Order (Paper No. 23), Sharp Corporation,
`
`Sharp Electronics Corporation, and Sharp Electronics Manufacturing Company of
`
`America, Inc. (collectively, “Sharp” or “Petitioner”) hereby move to exclude
`
`certain evidence submitted and relied upon by Patent Owner Surpass Tech
`
`Innovation LLC. (“Surpass” or “Patent Owner”). Petitioner identifies the specific
`
`evidence to be excluded below by Exhibit number, and where appropriate, by
`
`paragraph number. Petitioner also identifies the basis for exclusion. Petitioner has
`
`timely objected to these exhibits.
`
`II. ARGUMENT
`
`The admissibility of exhibits submitted in a PTAB proceeding is governed
`
`by the Federal Rules of Evidence (“F.R.E.”). 37 C.F.R. § 42.62(a) (“the Federal
`
`Rules of Evidence shall apply to a proceeding”); Trial Practice Guide, 77 Fed. Reg.
`
`at 48,758 (“Admissibility of evidence is generally governed by the Federal Rules
`
`of Evidence”). Patent Owner, as the proponent, carries the burden of establishing
`
`the admissibility of the challenged evidence.
`
`615068.2
`
`1
`
`
`
`
`
`A.
`
` Paragraphs 14, 18-23 and 28-30 of Mr. Bohannon’s Declaration Are
`Improper and Untimely Claim Amendments
`
`Paragraphs 14, 18-23 and 28-30 of Mr. Bohannon’s Declaration (Ex. 2005)
`
`should be excluded from the record as an improper and untimely attempt to amend
`
`the claims in violation of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Petitioner
`
`has raised this issue in its timely filed Objections (see Paper No. 21, Paragraph 2 of
`
`Specific Objections), as well as in Petitioner’s Reply (see Paper No. 24,
`
`Petitioner’s Reply at 12-13).1
`
`In its Response, Patent Owner asserted for the first time that the concept of
`
`“overdriving” should be added to Claim 4, even though Claim 4 does not recite this
`
`element.2 Specifically, Patent Owner argued that “claim 4’s phrase ‘applying the
`
`data impulses to the liquid crystal device of one of the pixels … to control a
`
`transmission rate of the liquid crystal device of the pixel’” should be construed as
`
`
`1 Petitioner objected to Paragraphs 25, 27 and 32-35 on the same ground. However,
`
`Surpass has not cited or otherwise relied upon these Paragraphs. Thus, these
`
`Paragraphs are not admissible. See CBS Interactive Inc. v. Helferich Patent
`
`Licensing, LLC, IPR2013-00033, Paper 118 at 2-3 (PTAB Oct. 23, 2013).
`
`2 Patent Owner’s Preliminary Response did not offer any claim constructions, and
`
`the Board’s decision instituting trial found no need to construe any the claims.
`
`(Paper No. 10, 5).
`
`615068.2
`
`2
`
`
`
`
`
`“applying two or more overdriven data impulses in order to control a transmission
`
`rate of the liquid crystal device, or overdriving.” (See Paper No. 20, Response at
`
`25-26) (emphasis added).
`
`While Patent Owner offers this new argument under the guise of claim
`
`construction, it is actually an improper and untimely claim amendment. In this
`
`regard, Claim 4 does not refer to overdriving; rather, this concept is only referred
`
`to in Claim 1. Patent Owner’s attempt to shoe horn this limitation into Claim 4 is
`
`nothing more than an improper attempt to bypass the Rules governing claim
`
`amendments in IPR proceedings. The relevant Rules and Scheduling Order in this
`
`proceeding required Patent Owner to, among other things, confer with the Board
`
`and Petitioner regarding the proposed amendment by May 28, 2015. (37 C.F.R. §
`
`42.121(a); see also Paper No. 16, 2-3 (“[I]f Patent Owner determines that it will
`
`file a motion to amend, Patent Owner must arrange a conference call no later than
`
`two weeks prior to DUE DATE 1 with the Board and opposing counsel to discuss
`
`the proposed motion to amend.”)). Patent Owner would have then been required to
`
`file a motion to amend (separate from Patent Owner’s Response) that complied
`
`with the requirements of 37 C.F.R. § 42.121(a)-(b). In such a motion to amend,
`
`Patent Owner would have had to show a “patentable distinction over the prior art
`
`of record and also prior art known to the patent owner.” Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., IPR2012-00027, Paper 26 at 7 (PTAB June 11, 2013).
`
`615068.2
`
`3
`
`
`
`
`
`Patent Owner failed to take any of these required steps, and instead sought to
`
`introduce the claim amendment through Mr. Bohannon’s declaration testimony.
`
`This simply is not the proper procedure for amending claims, and as such,
`
`Paragraphs 14, 18-23 and 28-30 of Mr. Bohannon’s Declaration (Ex. 2005) should
`
`be excluded from the record under 35 U.S.C. § 316(d), 37 C.F.R. § 42.121. See
`
`also Idle Free Systems, IPR2012-00027, Paper 26 at 7.
`
`B.
`
` Paragraphs 14, 18-23 and 28-30 of Mr. Bohannon’s Declaration Are
`Irrelevant
`
`In addition to including improper claim amendments, Paragraphs 14, 18-23
`
`and 28-30 of Mr. Bohannon’s Declaration (Ex. 2005) should also be excluded from
`
`the record under F.R.E. 402, 701, 702 and 703 because they are irrelevant to any
`
`issue in this proceeding. Petitioner has raised this issue in its timely filed
`
`Objections (see Paper No. 21, Paragraph 3 of Specific Objections), as well as in
`
`Petitioner’s Reply (see Paper No. 24, Petitioner’s Reply at 14-25).3
`
`As discussed above, these paragraphs relate solely to the legally irrelevant
`
`“overdriving” technique. However, none of the claims-at-issue in this proceeding
`
`refers to the “overdriving” technique. Significantly, Mr. Bohannon admitted
`
`during the cross-examination that the support for his discussion of the
`
`
`3 Petitioner objected to Paragraphs 25, 27 and 32-35 on the same grounds.
`
`However, as discussed in Footnote 1, these Paragraphs are inadmissible.
`
`615068.2
`
`4
`
`
`
`
`
`“overdriving” technique comes from the language of Claim 1, which is not at issue
`
`in this proceeding: “If I read Column 6, Line 15 [i.e., Claim 1] . . . it says,
`
`generating a plurality of data impulses according to a plurality of overdriven pixel
`
`data.” (Ex. 1009, Bohannon Tr. 81:5-82:10 (emphasis added); see also id. at 82:23-
`
`83:11 (relying on the same language); id at 127:2-22 (relying on Column 2:33-48
`
`of the ‘843 Patent); id. at 73:7-15 (relying on Col. 2:40 of the ‘843 Patent); id. at
`
`36:5-19, 37:4-18, 61:18-63:5, 86:22-88:1 (relying on similar passages in the ‘843
`
`Patent)). All of the passages that Mr. Bohannon relies upon merely parrot the text
`
`of Claim 1. (Compare Ex. 1001, ‘843 Patent, Col. 2:33-48, with id. at Col. 6:7-
`
`24). He never cited the other portions of the patent that relate to the claims-at-
`
`issue (i.e., Claims 4, 8 and 9), which do not refer to overdriving.
`
`Mr. Bohannon also relied on the examples in the specification that include
`
`overdriving (see, e.g., Ex. 2005, ¶ 28) and admitted that he was operating under the
`
`belief that it was permissible to read elements from the specification into the
`
`claims-at-issue in this proceeding:
`
`Q. . . .[I]s it your testimony that if a specification describes a certain
`concept, that that concept should be incorporated into the claims?
`A. . . . that’s my understanding . . . .·
`(Ex. 1009, Bohannon Tr. 88:4-14 (emphasis added); see also id. at 86:8-21).
`
`In view of the foregoing, Mr. Bohannon’s declaration testimony regarding
`
`an “overdriving” technique is irrelevant to any issue in this proceeding, and
`
`615068.2
`
`5
`
`
`
`
`
`Paragraphs 14, 18-23 and 28-30 of Mr. Bohannon’s Declaration (Ex. 2005) should
`
`be excluded under F.R.E. 402, 701, 702 and 703.
`
`C.
`
` Exhibits A and C to the Marentic Deposition Are Untimely and
`Irrelevant
`
`During the October 6, 2015 deposition of Petitioner’s expert, Michael
`
`Marentic, Patent Owner marked several new pieces of evidence, including: (1) a
`
`declaration provided by Mr. Marentic in an unrelated proceeding, IPR2015-00913,
`
`marked as Exhibit A; and (2) U.S. Patent No. 4,464,657, which names Mr.
`
`Marentic as an inventor, marked as Exhibit C. Petitioner objected to the
`
`introduction of these new exhibits at the time they were marked by Patent Owner
`
`as irrelevant. (Transcript of Oct. 6, 2015 Marentic Deposition at 23:20-24:11 and
`
`51:10-52:7).
`
`These two documents have no bearing on an issue in this case. Thus, they
`
`should be excluded under F.R.E. 402 as irrelevant. In addition, they have not been
`
`cited and relied upon by any party. Indeed, both of these documents were
`
`available to Patent Owner long before it filed its Response in this proceeding
`
`(Paper No. 20). Therefore, Exhibits A and C to Mr. Marentic’s deposition should
`
`also be excluded as untimely. See The Scotts Co. LLC v. Encap, LLC, IPR2013-
`
`00110, Paper 79 (Jun. 24, 2014) (granting motion to exclude untimely evidence).
`
`III. CONCLUSION
`
`For at least the reasons stated above, Petitioner respectfully requests that the
`
`615068.2
`
`6
`
`
`
`
`
`Board grant this Motion to Exclude Evidence.
`
`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN
`LLP
`Attorneys for Petitioner
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`Dated: October 15, 2015
` New York, New York
`
`
`
`By: /Anthony F. Lo Cicero/
`Anthony F. Lo Cicero
` Registration No.: 29,403
`
`615068.2
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on this
`
`15th day of October, 2015, a copy of the foregoing PETITIONER’S MOTION TO
`
`EXCLUDE EVIDENCE was served via e-mail on the counsel of record for the
`
`Patent Owner at the following e-mail addresses:
`
`Wayne M. Helge (whelge@dbjg.com)
`Donald L. Jackson (djackson@dbjg.com)
`Michael R. Casey (mcasey@dbjg.com)
`
`
`
`
`By: /Anthony F. Lo Cicero/
`Dated: October 15, 2015
` New York, New York Anthony F. Lo Cicero
` Registration No.: 29,403
`
`
`
`
`
`
`
`
`
`
`615068.2
`
`8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
